Research, Innovation & Commercialisation

Intellectual Property Disclosure Form

Overview

An Intellectual Property Disclosure is a description of Intellectual Property (IP) or research development that is provided to the University. You must submit an Intellectual Property Disclosure Form whenever you have discovered something unique that may solve a significant problem. Submission should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications. Once publicly disclosed (i.e. published or presented in some form to non-University listeners), the IP will have more limited options for patent protection. When you disclose your IP to the University, it starts a process that could lead to the commercialisation of your technology.

It is essential that all researchers seek advice from and discuss their IP or research development with the Research Innovation & Commercialisation Business Development representative for their Faculty before submitting the Intellectual Property Disclosure Form. Please contact Dr Kevin Orrman-Rossiter, Research Partnerships Officer (Ph: 03 8344 1539; Email: kevin.orrman@unimelb.edu.au) for the contact information of your Business Development representative.

Intellectual Property Policy

The Intellectual Property Policy (MPF1320) sets out the principles of management and administration of intellectual property in which the University asserts ownership under the University of Melbourne Act 2009 (Vic), the University of Melbourne Statute and the Vice-Chancellor Regulation.

Important information in respect of disclosure of IP:

The University asserts ownership of intellectual property created by staff in the course of, or incidental to, employment with the University, except copyright in scholarly works.

The University asserts ownership of intellectual property created by any student, honorary appointee or visitor:o (a) whilst engaged in an activity which is the subject of a specified agreement; oro (b) if that intellectual property constitutes teaching material.

Staff, students, honorary appointees or visitors of the University who are involved in or contribute to the creation of intellectual property must disclose such intellectual property to the University where the invention, discovery or technology has the potential to be developed or exploited for commercial application (Statute 13.6.c).

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0BRIC Office Use Only

1BID No.

2BDate received

Intellectual Property Disclosure Form

The purpose of this form is to officially notify the University of IP that has been developed. The form also serves to establish a legal record of the date of conception of the IP. An Intellectual property Disclosure Form remains a confidential document, and fully documents your IP so that the options for commercialisation can be properly evaluated.

Before submitting the Intellectual Property Disclosure Form to the University you should:

a) Discuss your IP or research development with your Business Development representative; b) Confirm that all co-inventors/contributors have been made aware of and agree with the contents of the submission;

andc) Ensure best efforts are made not to publically disclose the inventor and related research to any external parties (this

includes submission of conferences abstracts and presentation or publication of the research through any forum).

Submission of an Intellectual Property Disclosure Form starts the formal process of assessing the IP you have developed for technology commercialisation. This Intellectual Property Disclosure Form should be fully completed and submitted to:

Dr Lachlan Wilson Intellectual Property and Licences ManagerResearch, Innovation & CommercialisationThe University of MelbourneT: +61 3 9035 5231 | F: +61 3 9347 5888 | E: lachlanw@unimelb.edu.auPostal Address: Intellectual Property & Licences, Research Innovation & Commercialisation, The University of Melbourne, Victoria, 3010

Please read the embedded guidance notes when completing this Intellectual Property Disclosure Form.

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Intellectual Property DetailsTitle

Name of RIC Business Development Manager who has been consulted in regards to this Intellectual property disclosure

Main inventor/ contact to assist the University in assessment of the Intellectual property

ContributorsPlease list all contributors to the IP regardless of whether they are considered to have been inventors.

An inventor is an individual without whose intellectual and creative input the IP could not have been made in its present form. They must have conceived or contributed an essential element of the IP either independently or jointly with others, during the evolution of the IP or its reduction to practice. The co-authors of publications are not necessarily inventors.

At the time of making the IP, if any of the inventors was: 1) a student; 2) not a University of Melbourne student / staff member; or 3) a student / staff member but ALSO had another external appointment or role, please tick the student/external boxes as appropriate.

If an individual is not considered an inventor but has contributed to the development of the IP then leave the inventor box unchecked.

Inventor

Name Position Department / School

External Affiliations (please list all)

Email/Contact No.

Student

External

Intellectual Property DescriptionWhat is the problem solved by this IP?

Do not describe the IP but instead focus on the problem found with existing technology, processes or services, or a recognised problem not adequately solved by existing technologies, processes or services.

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What is the stage of development of the IP? Please tick all that are appropriate from the following options:

idea / concept (target identification) early stage (target assay development and screening) proof of concept (target validation) bench prototype industry interest / use

Summary of the IP

Describe the IP in detail. Consider the commercial applications of the technology and how they might be applied to a product, process or service. Importantly, please describe what aspects of the IP have been proven experimentally and what is shown by the data. Also describe what materials or prototypes have been created in relation to the IP. Attach any technical documents of IP including (submitted or draft) manuscripts, posters, theses and grant applications.

What date(s) did you make the IP?

The date is when the inventor(s) devised the essential concepts of the IP - but without necessarily having proved that it would work or having built a prototype.

How has the IP been documented?

Identify whose laboratory notebook(s) the experimental data for this IP has been recorded in and note any reference numbers.

Competitive Advantage

Describe the competitor technologies, processes or services which attempt to address the problem. What is the closest existing or known technology – please provide links to the related companies’ products or service websites. What are the advantages and benefits of your IP over these competitor approaches – have you experimentally compared your IP to the “gold standard” competitor technology or process?

Future Research

What further research will be conducted over the next 12 months to demonstrate proof of concept or further validate the IP? For example, for platform technologies the demonstration of an advantageous application and

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comparisons to “gold standard” commercial technologies or products.

Public Disclosures

Public Disclosures

Provide details of any public disclosures of this IP by contributors including publications, theses, posters, presentations, abstracts, submitted manuscripts and patents. Please also attach copies or transcripts of these disclosures. In most countries a patent application must be filed before an oral or printed publication is made available to the public. Publication means the first time any person, without restriction of confidentiality, would have been able legally to gain access to your description. This can include where external people attend a University of Melbourne internal presentation. ‘Oral disclosure’ means lectures, seminars, conference presentations, any talk to external research groups, or in general conversation with people outside the University - except where these activities were covered by a documented obligation of confidentiality.

Consider whether any details of any of your research have been disclosed publicly and provide brief details of the disclosure subject matter:

In a journal (online or in print) At a conference or seminar, as an abstract, poster, etc (including online before the conference) In any other publicly disclosed communication, including conversation In a PhD, Masters thesis or project write up

For any noted disclosures:

Attach any relevant disclosure documents If students were involved, please include details of any material or presentations made for examination

Provide details of previous disclosures of this IP

Date Type of disclosure

Aspects of the IP disclosed Details or reference of the Journal/Conference/Seminar/Thesis

Copy att

ached

Provide details of any upcoming disclosures of this IP

Provide details of any public disclosures that are closely related to this IP

Sources of Funding Was the IP developed using any research grants/contract funds?

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Please answer Yes or No

If Yes, provide details:

Give the applicable contract/grant, project title(s) and the project start/end dates on the project(s) in the table below if the IP was made in connection with research funding. Also consider funding used by all contributors including students. Please note any non-University of Melbourne collaborators who are grant co-applicants, sub-contractors or are otherwise supported under the grant. We need to ensure that we fulfil our obligations under research grants and contracts.

Please attach any relevant contract.

Grant Ref Title Sponsor Collaborators Start and End Dates

Obligations to sponsors

Are you aware of any obligations to any sponsors e.g. disclosure of IP, final project reports, or commercial grant of rights (option/licences)?

Details of external collaborators who have contributed to the IP

Please provide details of non-funded collaborations with non-UoM collaborators which have been conducted through a research project relating to the IP.

Start Date / End Date Collaborator Affiliation Contribution of collaborator

Use of Information [Complete if applicable]Was any aspect of the IP made possible, in whole or in part, by the use of Information obtained from individuals other than contributors listed above or from organisations other than the University of Melbourne?

Date Information provider Affiliation of provider Details of information provided

Materials [Complete if applicable]Was any aspect of the IP made possible, in whole or in part, by the use of tangible Materials obtained from individuals other than contributors listed above or from organisations other than the University of Melbourne?

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Date Materials provider

Affiliation of provider

Details of Material provided Was a Material Transfer Agreement (MTA) signed in respect of receipt of the materials? If yes, please provide a copy.

Yes or No

Yes or No

In the course of creating the IP have you developed any Materials that may be of commercial value? Please provide details. Such materials are often of a biological nature e.g. cell lines, antibodies, plasmids, disease models and assay but can include any non-biological material or prototypes.

Were any of Materials received from external organisations used in the development of or incorporated into the Material(s) described above? Please provide details.

Software [Complete if applicable]Was any aspect of the IP made possible, in whole or in part, by the use of Software obtained from individuals other than contributors listed above or from organisations other than the University of Melbourne?

Date Information provider Affiliation of provider Details of Software provided

Has any software been developed?

Please answer Yes or No

If yes, please list the authors of the software’s source and executable code.

Name Author’s contributions to the code

Department/ School/ Affiliations

Student

Email/Contact No.

Please provide further information in respect of the involvement of any external authors:

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Third party code in software

Please complete the list of all third party code embedded in or accessed by the disclosed software when such software is run. This list must include, without limitation, all open source code, free executable code, public domain code, library code, and all other executable or source code not written by any of the Authors listed in this form, whether such code is directly embedded in the software or accessed by the software when it is executed. ALL AUTHORS MUST DISCLOSE ALL OF THE THIRD PARTY CODE AND MATERIALS THAT HAVE BEEN EMBEDDED IN THE SOFTWARE. Software code and related materials easily available for download and available without cost are NOT free. These codes and related materials are restricted by licensing terms that must be reviewed and complied with. Also list any code or related materials with which the software automatically links, executes, or integrates that may not be embedded in the software.

Name of third party code Web page to download code Web page location of third party license

Further relevant information:

Prior Art

Please provide details of literature and patent searches

Please list publications that are closely related to your IP. Please also list closely related patents (conduct a patent search using keywords at https://patentscope.wipo.int/search/en/search.jsf and/or https://www.lens.org/lens/) and attach a list of the keywords used and results obtained.

Publication details Relevance to the IP

CommercialisationMarket Information

Please list companies you have contacted, those you think are active in the area, or who want to develop a new product line. If possible please give contact information (we’ll consult you before we get in touch with them).Company Contact details Scope of interest and/or relevance to IP

Declaration

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I have discussed this intellectual property with the Research Innovation & Commercialisation (RIC) Business Development representative for my Faculty

I have discussed the content of this intellectual property disclosure and obtained consent for its submission with my co-inventor/s and co-contributor/s

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